Five Trademark Myths

Recently, trademarks have been front and center in the publishing world. Authors are now forced to add legal analysis to their many tasks, considering the scope of trademark protection for book titles, series names, characters, cover designs, and even their own names. Alas, actual trademark law is often obscured by myth and misunderstanding. This article will clarify the truth about United States trademark law.

(But first, a brief disclaimer: This article is not legal advice for your specific circumstances; you’ll have to hire a lawyer for that. This article only covers United States law. Trademark laws vary by country, and the information contained herein may not apply to writers in other countries.)

Myth 1: Trademarks Cannot be Adjectives

Participate in any discussion of trademark law for any length of time, and you’ll find bald statements that trademarks cannot be adjectives, or proper nouns, or text in a specific font, or, or, or… These broad-brush declarations are incorrect.

Federal trademark law protects “any word, name, symbol, or device … used by a person … to identify and distinguish his goods.” (Emphasis added.) Trademarks can be plain words, words in a specific font, logos, proper names, or even scents, sounds, or colors. (Trademarks relate to physical goods; service marks relate to services. “Mark” refers to either trademarks or service marks.)

COCA-COLA, for example, is a trademark for carbonated beverages, owned by The Coca-Cola Company. In addition to the plain words, the trademark is protected in a distinctive script with an accompanying flourish. The words might appear in a circle, and they might be accompanied by the trademark Coke. Sometimes they’re written in silver, red, or white on a red, black, white, silver, or green background. In addition to the familiar words, The Coca-Cola Company is also symbolized by the “fat bottle” design, by animated polar bears, and by other distinctive words and symbols.

Trademark registrations have been issued for the scent of plumeria blossoms for sewing and embroidery yarn (owned by Clarke’s Osewez), for the sound of three chimes for broadcasting of television programs (owned by NBC Universal Media, LLC), and for the color pink for fibrous glass residential insulation (owned by the Owens-Corning Fiberglas Corporation).

All of these marks indicate that specific products come from a single source. Trademarks are a form of consumer protection, guaranteeing that goods will have expected characteristics. Coca-Cola, for example, will taste like Coca-Cola and not like any other cola product on the market.

Applying these rules to the publishing world, one can draw some general conclusions:

The vast majority of book titles cannot be protected by trademark law, because a single title, standing alone, is not sufficient to indicate the source, sponsorship, or origin of the work.

Some series titles can be protected by trademark law, because they do indicate the source, sponsorship, or origin of the work, a connection that is strengthened over time as multiple books with similar characteristics are released in the series.

Some characters can be protected by trademark law; however, the author must show “secondary meaning”—see discussion below—and that secondary meaning is extremely difficult (maybe impossible) to show with a character described solely in text as opposed to a graphic character, such as Mickey Mouse.

Some cover designs can be protected by trademark law; however, the designs most likely to be protected are indicators of a series or imprint, such as the blue panel on the left side of a Harlequin Special Editions book. A generic “clinch” cover is not distinctive enough to be protected.

Some author names can be protected by trademark law; however, the author must show “secondary meaning”—again, see discussion below.

Myth 2: Trademarks Must be Registered with the Federal Government

In the United States, trademark rights are determined by date of first use, rather than by the first date of filing an application. (In some other countries, date of application prevails over date of first use.) There are three basic “regimes” of trademark law: common law, State, and Federal.

Some trademark owners don’t go through any process to register their trademarks. Instead, they rely on common law protection, exercising the exclusive right to use their trademarks in those geographic areas where they have actually sold goods. Common law trademark owners have no rights beyond the boundaries of the actual geographic regions where they have made sales. They may use the ™ symbol on their goods or the SM symbol on their services.

State trademark registrations provide additional protection beyond the common law. Often processed by the state’s Secretary of State office, state trademark registrations offer owners the exclusive right to use their trademark throughout that state. (Another person could use the identical trademark in the next state over.) State trademark owners may use the ™ symbol on their goods or the SM symbol on their services. In practice, few people obtain state trademark registrations because few goods and services are offered solely in one state.

Federal trademarks are registered with the United States Patent and Trademark Office (“PTO.”) Trademark owners file an application, declaring their exclusive right to use a trademark, paying up to $400 for each class of goods or services. A PTO attorney reviews that application, often posing detailed questions to determine the extent of the applicant’s right.

Once the PTO’s concerns are answered, the mark is published for opposition in the Official Gazette, a weekly publication that announces marks intended to be registered. Any concerned party has a limited time to explain to the PTO why the registration should not proceed.

Ultimately, if a federal registration is granted, the trademark owner has the exclusive right to use the trademark throughout the United States, even if the owner has not yet actually sold goods throughout the country. The owner may use the ® symbol next to the mark.

The owner’s registration is valid for as long as the mark remains in use, if the registrant files affidavits at regular intervals testifying to that use. The trademark owner must fight any infringement of the trademark; failure to protect a mark may result in losing the exclusive right to use it. The registration may be challenged in a cancellation proceeding, where someone claims that the registration was improperly issued or that the mark is or has become generic.

Typically, trademark owners enforce their rights against infringers with a cease and desist letter, explicitly citing the contested trademark, the owner’s registration number, and the specific goods and services for that registration. The letter should demand that the infringer stop all unlawful action by a specific date, threatening follow-up litigation in federal court if the infringement does not stop.

While individuals can send their own cease and desist letters, most registrants have an attorney prepare and send the letter. Infringers are generally more intimidated to receive correspondence from a law firm with a proven reputation in court.

If the infringement does not end, the trademark owner must file suit in federal court or risk the PTO determining that the trademark cannot be protected against other, later infringers. Courts evaluating infringement claims apply the standard of “likelihood of confusion”—a multi-part test—to determine whether a trademark has been infringed.

The first part of the likelihood of confusion test is the strength of the trademark. Trademarks fall on a spectrum from strong to weak:

Arbitrary (e.g., EXXON for gasoline)

Suggestive (e.g., GREYHOUND for bus lines)

Descriptive (e.g., GOOD AND PLENTY for candy)

Generic (e.g., aspirin)

Descriptive marks can only be protected if they have acquired “secondary meaning”—if there’s proof that consumers have come to associate the trademark owner with the goods in question. Typically, that connection is made through advertising (e.g., Owens-Corning’s “Think Pink” campaign to promote its pink fiberglass insulation.) It can be measured by surveys of consumers. (Generic marks can never be protected, because consumers don’t connect the good or service with a specific source.)

The second test for likelihood of confusion is the similarity of the trademarks. Courts look at the appearance, sound, and meaning of the marks when making this evaluation. The third test is the similarity of products or services, and the fourth test is actual confusion.

Myth 4: An author may never use a registered trademark in fiction

Sometimes authors want to use trademarks to lend realistic detail to their work. For example, saying a heroine drives a Mercedes-Maybach S600 paints a very specific picture, one that is different from saying she drives a Ford Fiesta.

As an initial matter, authors should check to see if the brand names they mention are, in fact, registered trademarks. Over time, some trademarks become generic because their owners did not properly police their rights, keeping unrelated third parties from using them. “Genericized” trademarks include aspirin, dry ice, escalator, heroin, kerosene, trampoline, and videotape. Each of these originally indicated the goods of a specific company (with a specific consumer expectation of quality); however, they’re now used to define general goods without regard to a specific source.

PTO registration records are available online and can be searched at http://tmsearch.uspto.gov (Alas, the search interface is somewhat archaic, but the results are still quite useful.)

Some traditional publishers take a hard line against using any registered trademarks in fiction, insisting that none can be used in any context. Other publishers allow some registered trademarks, but not others. (For example, Harlequin permitted the use of Realtor but forbade the use of Superman—a restriction that is rumored to have relaxed, at least for some authors, after the merger with HarperCollins.) Still other publishers require the ® in the text of the book: “The hero drank a Coke®, while applying a Band-Aid® to a wound caused by his Colt®.”

Most publishers permit trademarks in text, capitalizing the trademark but forgoing the ®. They may or may not include a list of trademarks on the book’s copyright page, stating explicitly that the publisher is not claiming the trademark as its own.

Even publishers that allow registered trademarks in the text of books, though, tend to draw the line at using a trademark in the title of a book. (This line, however, was recently blurred when Italian jewelry company Bulgari hired author Fay Weldon to write THE BULGARI CONNECTION. In addition to using the trademark in her title, Weldon was required to use the trademark at least ten times in the text of the book.)

Authors should exercise caution when using a trademark in a negative context—for example, a trademarked product is of inferior quality or it causes harm to a character. In such a circumstance, the trademark owner might not have a legal case for infringement, but it could argue that its product was “tarnished” or disparaged by the negative use.

Authors seeking to avoid registered trademarks cannot merely change a letter or a spelling of a well-known mark because likelihood of confusion analysis considers the appearance, sound, and meaning of a mark. Thus, TIFF’NY jewelry is likely to be considered infringing of TIFFANY jewelry. EKSON gasoline is suspiciously close to EXXON because of the similarity in sound. And WINESAP may resemble APPLE too closely in meaning to use in a negative context.

Trademarks and copyrights work together to protect an author’s intellectual property. Nevertheless, there are clear differences between the two regimens, as summarized in this table:

Trademark

Copyright

Subject matter of protection

Names and logos

Creative work

Goal of protection

Prevent impostors

Preserve economic and moral rights

Basis of protection

Use and registration

Automatic upon creation

Ease of registration

Complicated and expensive (attorney is advised)

Easy and inexpensive (no attorney necessary)

“Use it or lose it”?

Yes; registration lapses if not used

No; registration exists for defined term

Requirement to police infringement?

Yes

No

Trademark law provides valuable protection for authors and for readers. As the value of trademarks is more understood, the publishing community is likely to see an increase in applications for registration of titles, series, characters, cover designs, and author names.